The Complainant is Orange Brand Services Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Archer & Angel, India.
The Respondent is Nayan Kumar Amrutlal Jain, Orange Retail Sales Pvt. Ltd. of Tirupati, Andhra Pradesh, India. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2014. On December 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 19, 2014.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 29, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 19, 2015.
The Center appointed Michelle Brownlee as the sole panelist in this matter on January 23, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant and its affiliated companies own numerous registrations for the marks ORANGE and ORANGE and design in many jurisdictions throughout the world. These include European Community Registration Numbers 127837 and 127902, registered in March 2001 for ORANGE and ORANGE and design, respectively, in connection with goods and services in International Classes 9, 16, 18, 25, 35, 36, 37, 38, 41, 42, and Indian Registration Numbers 642868, 814584, 814583, 814582, 814581 and 814580, registered between February 2003 and August 2005 for ORANGE in connection with goods in International Classes 9, 14, 16, 18, 25, and 28, among many others.
The Domain Name was registered on or about April 9, 2014. 5. Parties' Contentions A. Complainant
The Complainant is a wholly-owned subsidiary of Orange SA, and is part of the conglomerate of telecommunications corporations known as the Orange Group. The Orange Group is the sixth largest telecommunications company in the world. The ORANGE brand was launched in the United Kingdom in 1994, and was introduced in India in 2000. Since 2008, the Orange brand has consistently been independently valued as one of the sixty most valuable brands in the world. In 2013, the Orange brand was valued at USD 13.829 billion. During the years 2007 through 2011, the Complainant and its licensees spent more than EUR 700 million per year on advertising the ORANGE brand. The Complainant uses the ORANGE mark in connection with goods and services outside its core telecommunications business, including healthcare services, financial services, advertising services, information technology services and charitable services.
In September 2014, the Complainant discovered that the Respondent had registered the Domain Name and was using it in connection with a web site that was offering products and services that were similar to those of the Complainant. The Respondent's web site uses the word "ORANGE" very prominently on the site, and refers to the Respondent as being part of the "Orange Group," which the Complainant argues creates a false impression that the Respondent is affiliated with the Complainant. The Complainant sent cease and desist letters to the Respondent in September and October, 2014, and did not receive any reply from the Respondent. The Complainant contends that the Domain Name is confusingly similar to the Complainant's ORANGE trademark, that the Respondent has no rights to or legitimate interests in respect of the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the ORANGE trademark. The addition of the words "retail" and "sales" in the Domain Name does not serve to distinguish the Domain Name from the Complainant's trademark. When a famous mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the famous mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140. Under these circumstances, the Panel finds that the Domain Name is confusingly similar to the Complainant's ORANGE mark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii)the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant's prima facie case. The Complainant has alleged that the Respondent is using the Domain Name in connection with a web site that is offering goods and services that are similar to those offered by the Complainant. The Respondent has not refuted those allegations. In the Panel's view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Complainant has alleged that the Domain Name has been used in connection with a web site that attracts Internet users by creating a likelihood of confusion with the Complainant's trademark, that the web site is offering goods and services that are similar to those offered by the Complainant, and that the web site claims that the Respondent is part of the "Orange Group," which creates a false impression of affiliation with the Complainant. The Respondent did not reply to these contentions. Under the circumstances, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Date: February 5, 2015
Full & Egal Universal Law Academy